Hubbell Incorporated v. Koded G
Claim Number: FA2206001999053
Complainant is Hubbell Incorporated (“Complainant”), represented by Rebeccah Gan of Muncy, Geissler, Olds & Lowe, P.C., Virginia, USA. Respondent is Koded G (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hubbell-inc.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2022; the Forum received payment on June 3, 2022.
On June 3, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <hubbell-inc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hubbell-inc.com. Also on June 9, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the HUBBELL trademark established by its ownership of the portfolio of trademark registrations described below and its extensive use of the mark in its business manufacturing and selling residential and commercial electrical and electronic products, over a period which Complainant submits extends over a period of 100 years.
Complainant alleges that the disputed domain name <hubbell-inc.com> contains Complainant’s HUBBELL mark in combination with the element “inc” which is a generic acronym for a legal entity acronym “inc” and argues that the addition of both the term “inc” and generic Top Level Domain extension (“gTLD”) extension <.com> are insufficient to distinguish the disputed domain name from Complainant’s HUBBELL mark, verbally, visually, or as to commercial impression.
Complainant submits that therefore it has established the first element of the test in Policy ¶ 4(a)(i), namely, that it has rights to its HUBBELL mark and that the disputed domain name is confusingly similar thereto.
Complainant next alleges that Respondent has no rights legitimate interests in the disputed domain name because Respondent appears not to have been commonly known by the name “Hubbell”. ICANN Policy ¶ 4(c)(ii).
Complainant adds that it has never authorized use or registration of the disputed domain name <hubbell-inc.com>, or licensed its HUBBELL mark in connection with <hubbell-inc.com>.
Complainant further argues that it is well recognized that the mere registration of a domain name by a respondent, does not, by itself, create a right or legitimate interest in the domain name for purposes of the Policy.
Complainant submits that the disputed domain name was registered long after Complainant established trademark rights to HUBBELL,
Complainant further alleges that Respondent used the disputed domain name to falsely represent itself as Complainant in a scheme to fund a fraudulent scheme to profit Respondent and submits that such use is not bona fide use as contemplated in the Policy ¶ 4(c)(i) as it is explicitly excluded by ¶ 4(c)(iii), which requires that legitimate use must be “without intent for commercial gain to misleadingly divert consumers”.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that in or around May 2022, Complainant was alerted to a fraudulent scheme involving this domain, wherein the names and likenesses of individuals working in Complainant’s human resources department were used to create fake and fraudulent offers of employment which were conditioned upon the payment of certain processing fees. This allegation is supported by a declaration under penalty of perjury sworn by Complainant’s Senior Director of Cybersecurity Operations, signed and dated May 31, 2022.
Complainant argues that such use of the disputed domain name by Respondent to falsely impersonate Complainant to further a fraudulent scheme to benefit Respondent constitutes registration and use of the disputed domain name in bad faith as such actions trade off Complainant’s HUBBELL mark and name, and history as an employer.
Complainant also submits that the disputed domain name does not resolve to an active website. This Panel notes that Complainant has nonetheless provided a screen capture of the web location to which the disputed domain name resolved on May 23, 2022, which is a landing page with links to websites that apparently offer goods similar to those offered by Complainant. The links named for example “Lighting Fixtures”, “Outdoor Lighting Fixtures”, “Rv Light Fixtures”, “Electrical Outlet Covers” and “Plug Covers”, appear to be active.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of electrical and electronic products including for the construction, industrial, commercial, communications, and utility industries marketed under the HUBBELL trademark for which it owns a portfolio of trademark registrations including the following:
· United States registered trademark, HUBBELL, registration number 1018779, registered on the Principal Register on August 26, 1975 for goods in international class 11;
· United States registered trademark, HUBBELL, registration number 1982131 registered on the Principal Register on June 25, 1996 for goods in international class 6;
· United States registered trademark, HUBBELL (Design) registration number 1033883 registered on the Principal Register on February 17, 1976 for goods in international class 17;
· United States registered trademark, HUBBELL (Design) registration number 1019302 registered on the Principal Register on September 2, 1975 for goods in international class 9;
· United States registered trademark, HUBBELL (Design) registration number 1936597 registered on the Principal Register on November 21, 1995 for goods in international class 8;
· United States registered trademark, HUBBELL (Design) registration number 1952348 registered on the Principal Register on January 30, 1996, for goods in international class 9.
The disputed domain name was registered on April 21, 2022, and resolves to a website with third party links.
There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
The identity of the registrant of the disputed domain name is redacted for privacy on the published WhoIs and the Registrar has confirmed that the Respondent is the registrant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested evidence to prove that on the balance of probabilities it has rights in the HUBBELL mark, established by its ownership of its portfolio of trademark- and service mark- registrations described above and extensive use of the mark in its business as a manufacturer and provider of electrical and electronic goods.
The disputed domain name <hubbell-inc.com> consists of Complainant’s mark in its entirety, in combination with a hyphen and the letters “inc” together with and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s HUBBELL mark is the initial, dominant, and only distinctive element in the disputed domain name. The hyphen has no significance in context and the element “inc” would be understood to be an abbreviation of the word “incorporated” signifying a corporate name, and so is generic, with no distinguishing character in itself. In combination with the HUBBELL mark it would on the balance of probabilities infer a reference to Complainant’s company name.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s HUBBELL mark.
This Panel finds therefore that the disputed domain name <hubbell-inc.com> is confusingly similar to the HUBBELL mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent appears not to have been commonly known by the name “Hubbell”;
· Complainant has never authorized use or registration of the domain name <hubbell-inc.com>;
· Complainant has never licensed its HUBBELL mark in connection with <hubbell-inc.com>;
· it is well recognized that a respondent’s mere registration of a domain name, does not, by itself, create a right or legitimate interest in a domain name at issue for purposes of the Policy;
· the disputed domain name was registered long after Complainant established trademark rights to HUBBELL;
· such use is not bona fide use as contemplated by Policy ¶ 4(c)(i) and is explicitly excluded by ¶ 4(c)(iii), which requires that legitimate use must be “without intent for commercial gain to misleadingly divert consumers”.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s trademark is the initial, dominant, and distinctive element of the disputed domain name.
There is no evidence that the registrant of the disputed domain name has any right interests in the HUBBELL name or mark, whereas Complainant has shown that it has extensive rights in the mark which it has used continuously in its electrical and electronic business for up to 100 years.
When the disputed domain name was chosen and registered on April 21, 2022 Complainant had already an established international reputation in the use of the HUBBELL mark and given that Respondent has not contested Complainant’s rights, this Panel must find that on the balance of probabilities the disputed domain name was registered with knowledge of Complainant, its rights and its business carried out under the HUBBELL mark.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was chosen and registered to target and take predatory advantage of Complainant’s mark and goodwill in the HUBBELL mark.
As to the question of registration in bad faith, Complainant has alleged that Respondent has used the disputed domain name to falsely represent itself as Complainant in a scheme to fund a fraudulent scheme to profit Respondent. However, the only evidence adduced by Complainant is a statement made under penalty of perjury by Complainant’s Senior Director of Cybersecurity Operations, signed and dated May 31, 2022, which states that in or about May 2022, he “was alerted to a new fraudulent scheme involving this disputed domain, wherein the names and likenesses of individuals working in Complainant’s human resources department were used to create phony offers of employment which were conditioned upon payment of certain processing fees.”
The statement does not contain any information about the deponent’s means of knowledge, nor is it supported any other documentary evidence, as would be expected. Where such documentation is sensitive it is nonetheless usually provided albeit in redacted form. In making this comment this Panel is not in any way casting doubt on the veracity of Complainant’s statement but emphasizing that the Policy establishes an evidenced-based procedure and in this case the unsupported statement does not meet the criteria required to prove the allegation of fraud. An allegation of fraud is a very serious matter.
Nonetheless, Complainant is entitled to succeed in this application because the screen capture of the web location to which the disputed domain name resolves, shows that it is either being held inactively, as argued by Complainant, or is being used to provide links to other web locations which offer goods or services associated with electrical or electronic supplies.
Such intentional and unauthorized use of Complainant’s mark within the disputed domain name constitutes bad faith use to attract, interfere with, and misdirect Internet traffic and the unauthorized use of the Complainant’s mark.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hubbell-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 6, 2022
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